Oiness v. Walgreen Co.

88 F.3d 1025
CourtCourt of Appeals for the Federal Circuit
DecidedJuly 2, 1996
DocketNos. 95-1138, 95-1164, 95-1205
StatusPublished
Cited by55 cases

This text of 88 F.3d 1025 (Oiness v. Walgreen Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Oiness v. Walgreen Co., 88 F.3d 1025 (Fed. Cir. 1996).

Opinion

RADER, Circuit Judge.

Walgreen Company (Walgreen) appeals a decision of the United States District Court for the District of Colorado. The district court denied Walgreen’s motion for remitti-tur, or in the alternative a new trial, on a jury award of $1.1 million in lost profits. The district court also denied Walgreen’s motion for judgment as a matter of law that Philip Oiness (Oiness) could not recover projected lost profits on the record evidence. Finally, the district court awarded Oiness [1028]*1028prejudgment interest at the Colorado statutory rate of 8%. Because the jury damages award was speculative, this court reverses-in-part, vaeates-in-part, and remands-in-part.

Oiness cross-appeals the trial court’s denial of its motion for enhanced damages and request for prejudgment interest at the rate of 16.52%. This court affirms the trial court on these issues.

BACKGROUND

This appeal features a small folding headrest called a Headchair. The Headchair resembles a tiny director’s chair which supports a user’s head off the ground. The Headchair sells primarily to sunbathers at the beach or to campers. This simple product has seen a tumultuous legal history.

Steven Younger (Younger) and Rudolf Fie-delak, co-inventors of the Headchair, filed a patent application for the Headchair on October 11, 1984. The patent issued on October 1, 1985 as U.S. Patent No. 4,544,203 (’203). Younger, Oiness, and other investors formed the corporation Sun Global Enterprises, Inc. (Sun Global). The inventors assigned the ’203 patent to Sun Global. In March 1984, Sun Global began making the Head-chair. Sales commenced in June 1984.

In mid-1985, B & E Sales Co. (B & E) began selling a folding headrest. Sun Global sued B & E in 1986 for infringement of the ’203 patent. In that trial, Younger testified that B & E’s infringement virtually destroyed the market for Sun Global Head-chairs. Sun Global won a lost profits damages award from B & E for harm to the retail market from 1986 through 1992.

In June 1986, Oiness formed a new corporation, Sun Products Group, Inc. (Sun Products), to sell the Headchair. Sun Products acquired the assets of the defunct Sun Global. Oiness thus acquired the ’203 patent. Oiness and Sun Products then sued Walgreen for infringement of the ’203 patent.

In April 1991, the district court held its first trial on this case. The jury found that Walgreen had willfully infringed the patent and awarded Oiness $300,000 in damages. Oiness v. Walgreen Co., 774 F.Supp. 1277, 21 USPQ2d 1654 (D.Colo.1991).

Walgreen appealed that decision to this court. Oiness v. Walgreen Co., 980 F.2d 742, 26 USPQ2d 1548 (Fed.Cir.1992) (non-precedential), cert. denied, 507 U.S. 1032, 113 S.Ct. 1849, 123 L.Ed.2d 473 (1993). On appeal, this court affirmed Walgreen’s liability, but vacated the damage award and remanded the case for reconsideration of the amount of damages. This court determined that the trial court had erred in its jury instructions on damages. The faulty instructions did not distinguish between the lost profits award for B & E’s infringement in 1985-1986 and the lost profits for Walgreen’s 1987-1990 infringement. Without this distinction, the jury could assess Walgreen for damages already compensated in the B & E trial. Furthermore, this court discerned a lack of substantial evidence to support the jury’s damage award. Id.

The district court retried the case on damages. In October 1994, the jury awarded Oiness $1,101,240 in lost profits and $10,150,-000 in projected lost profits. Specifically, the jury awarded projected lost profits of $1.4 million in the retail sales market, $750,000 in the premium market, and $8 million in the advertising specialty market.

Walgreen moved for judgment as a matter of law, remittitur of the damage award, and alternatively a new trial on damages, all of which the trial court denied in an Order Regarding Post-Trial Motions entered December 6, 1994. The district court also awarded 8% in prejudgment interest on the entire judgment.

DISCUSSION

Actual Sales

Walgreen moved for remittitur, or in the alternative a new trial and moved for judgment as a matter of law (JMOL) that the record evidence did not support projected lost profits. In considering a motion to amend the judgment, or in the alternative to grant a new trial on the amount of damages, a trial court must review the record to determine whether the jury’s verdict contravenes the “clear or great weight of the evidence.” Unisplay, S.A v. American Elec. Sign Co., [1029]*102969 F.3d 512, 517, 36 USPQ2d 1540, 1544 (Fed.Cir.1995) (quoting Standard Havens Prods., Inc. v. Gencor Indus., Inc. 953 F.2d 1360, 1367, 21 USPQ2d 1321, 1326 (Fed.Cir.1991), cert. denied, 506 U.S. 817, 113 S.Ct. 60, 121 L.Ed.2d 28 (1992)). This court reviews for an abuse of discretion the decision denying a grant of remittitur or a new trial because of an excessive damage award. K-B Trucking Co. v. Riss Int’l Corp., 763 F.2d 1148, 1162 (10th Cir.1985); see also Shearing v. Iolab Corp., 975 F.2d 1541, 24 USPQ2d 1133 (Fed.Cir.1992) (reviewing the denial of a motion for a new trial for an abuse of discretion).

In considering a motion for JMOL, a trial court reviews the record for substantial evidence to support the jury’s verdict. Federal Deposit Ins. Corp. v. United Pacific Ins. Co., 20 F.3d 1070, 1082 (10th Cir.1994).

On appeal from a decision on a motion for JMOL, this court must review the record for substantial evidence. Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1240, 9 USPQ2d 1913, 1924 (Fed.Cir.), cert. denied, 493 U.S. 853, 110 S.Ct. 154, 107 L.Ed.2d 112 (1989). The measurement of actual damages for patent infringement is a question of fact. Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1578, 24 USPQ2d 1401, 1417 (Fed.Cir.1992).

Upon a finding of infringement, title 35 envisions the award of damages adequate to compensate the patentee for infringement, but in no event less than a reasonable royalty. 35 U.S.C, § 284 (1994). The patent owner bears the burden of proving this amount. SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 926 F.2d 1161, 1164, 17 USPQ2d 1922, 1925 (Fed.Cir.1991). Beyond a reasonable or established royalty, a claimant must prove actual damages to establish entitlement to lost profits. Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 671, 7 USPQ2d 1097, 1106 (Fed.Cir.), cert. denied, 488 U.S. 968, 109 S.Ct. 498, 102 L.Ed.2d 534 (1988). Proof of actual damages must include a causal connection between the infringement and the lost profits.

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88 F.3d 1025, Counsel Stack Legal Research, https://law.counselstack.com/opinion/oiness-v-walgreen-co-cafc-1996.